116 B, Mittal Towers, Nariman Point, Mumbai, India

WHAT ARE DERIVATIVE WORKS?

Copyright protection under the Copyrights Act, 1957 (“the Act”) is known to extend to two classes of works i.e., original works and derivative works. There has been abundant discussion on copyright in original works. In this article, we will be discussing copyright in derivative works, specifically in the music industry. Derivative works are based on existing subject matter and are also known as secondary works. The Act does not define derivative works but the practice of creating new works that substantially take from a pre-existing works have been prevalent for several years. In the music industry, some customary forms of derivative works include mashups and remixes. A popular example of such a work is Tesher’s famous track, ‘Old Town Road vs. Ramta Jogi’, which combines various components of two distinct tracks. Another frequently noted form of creating derivative works involves sampling of music. The debate surrounding whether derivative works should be awarded copyright protection and whether they infringe upon the copyright of the rights holder in primary work has been long-standing and will be discussed in this piece.

UNDERSTANDING ‘REMIXES’, ‘MASHUPS’ AND ‘SAMPLING OF MUSIC’

In recent years, remix culture has become increasingly popular. As the term suggests, a remix refers to rearrangement or mixing of an existing musical work. It may also involve combining pieces of music together and effecting certain cosmetic changes to the existing works. Remixes are different from the original version but derive greatly from it. The term mashup refers to the act of ‘mashing’ together or combining existing musical works to produce a new musical work. Remix and mashup tracks are both creative works that involve the use of skill.

Sampling refers to the act of lifting portions of sound recordings or musical compositions from existing musical works and then using them as part of a new musical work. The practice of sampling has been prevalent in the music industry for decades. It has been noted that sampling continues to be the “linchpin of a variety of musical styles” including rap, hip-hop, dance, house and even rock music.

LEGAL POSITION ON SAMPLING OF MUSIC IN INDIA

In India, there are no express provisions in the Act that cover sampling of musical works. Section 14 of the Act states that an owner of copyright possesses the exclusive rights to protect their work, to make copies, reproduce the work and make adaptations of it. Section 51 of the Act covers instances of unauthorised use that would amount to infringement. It states that when a person uses an existing work without obtaining a license from the owner of copyright in such work; or uses it in contravention of the conditions on which a license was issued, the copyright in a work would be deemed as being infringed upon. An adaptation refers to the preparation of new work that is based on a prior work, in either the same form as the prior work or in a different one. The transcription of a musical work or any act that involves re-arrangement or alteration of an existing musical work amounts to an adaptation. A similar interpretation can be located in sub-clauses (iv) and (v) to Section 2 (a) of the Act. Hence, in order to create remixes, mashups and sample existing musical works, creators indulge in ‘adaptation’ of existing work in which copyright may subsist.

Music composers have constantly borrowed from existing musical works in varying degrees. Modern musical works have also witnessed the use of samples while creating new work, including technologically altered music. Since sampling involves the reproduction of a portion of a copyrighted work, a mechanical license is required to be sought from the owner of copyright. Licensing facilitates the lawful reproduction of creative works. However, owners of such copyright are not bound to approve the sample. Unauthorised reproduction or ‘sampling’ of a work would amount to copyright infringement under the general rules of copyright. Section 52 of the Act covers acts that do not amount to copyright infringement and embodies the principle of ‘fair dealing’. The ‘fair dealing’ protection extended in Indian Copyright law is similar to what is provided in the English law. American law slightly diverges from this view and expands the ‘fair use’ protection.

Section 52 the Act encapsulates the fair dealing defence to copyright infringement in India and as per the Section, certain uses of copyrighted work would be outside the purview of infringement. As per Clause (1) (a), these include private or personal use and criticism or review of that work or any other work and research. The defence extended under this provision takes a very restricted approach. The limited nature of protection extended under the Section puts creators of derivative works at risk of being sued for infringement in the absence of a valid license from the relevant stake holders.

AMERICAN APPROACH TO SAMPLING

De minimis rule

Although digital sampling has been around for decades, American statutes are relatively silent on sampling. However, there is ample litigation that helps us understand the various views taken by Courts. 17 U.S. Code - 106 provides that certain exclusive rights related to copyrighted work are vested solely in the copyright holder. These include right to reproduce, distribute, prepare derivative works from the work that they hold copyright in. The rights to rearrange, remix or alter the sequence or quality of an original work arise from this provision.

For a claim of copyright infringement to succeed in the United States, the test is twofold.

In Grand Upright Musicv. Warner Brothers, the requirement of obtaining a licence for sampling was established. It was also established that a license is required to be obtained from the owner of copyright in the sound recording as well from the creators of the underlying works. In Newton v. Diamond, the 9th Circuit Court ruled that no separate licence was required because the use of the short segment of a six second, three note segment was de minimis and the segment was “simple, minimal, and insignificant” to the overall work. Hence, this case carved out an exception to copyright infringement, that is the de minimis rule. During the de minimis analysis, the Court considers whether quantitatively and qualitatively significance of the sampled portion to the composition. In Bridgeport Music v. Dimension Films, the Sixth Circuit Court also used the de minimis analysis when determining liability for infringement of musical compositions.

There is a "virtual circuit split" on whether the de minimis rule can be used to determine infringement caused by sampling. The 9th Circuit Court believes that in the case of musical composition, a de minimis analysis should be performed to determine whether the sampled portion is significant enough to constitute infringement. However, the 6th Circuit Court of Appeals ruled that if a licence is not obtained, any sampling would constitute infringement of a sound recording because even a small two second portion is valuable. Hence, there are diverging views on the use of the rule of de minimis.

Doctrine of fair use

Moving on to the exception to copyright infringement that finds statutory recognition - the doctrine of fair use. 17 U.S. Code - 107 embodies the doctrine of fair use, a defence available against claims of copyright infringement. It allows individuals and entities to use the portions of a copyrighted work limited by certain conditions. Use that satisfies the conditions mentioned in the provision would not amount to infringement. The provision states that four primary factors need to be considered while determining fair use of a work.

  • First, the purpose as well as the character of use;
  • Second, the nature of the copyrighted work;
  • Third, the amount and substantiality of portion of work that has been copied;
  • Fourth, how the copied work could affect the potential market of the copyrighted work or its value.

In Campbell v. Acuff-Rose Music, the Supreme Court extensively discussed the scope of the doctrine of fair use. While conducting the four-factor test analysis for a parody, it held that the commercial use alone does not suggest that use of copyrighted material is not fair use since there are other factors that have to be taken into consideration such as whether the use is characterised by transformativeness. The Court also noted that the artistic value of parodies extends from their ability to invariably extract from the parodied work and a considerable amount of the original work has to be used recognisably.

CONCLUSION: THE WAY FORWARD

Derivative works form a large part of the artistic content that is consumed in today’s world. If the creation of derivative works is restricted by virtue of infringement actions, it would stifle creative expression and hamper artistic growth. In India, when it comes to interpreting fair dealing norms, there is lack of clear guidelines and established rules.In the US copyright law and judicial interpretation, hostility towards samplers who fail to obtain licenses from the relevant copyright holders of musical compositions and/or sound recordings can be noticed. Yet, there is ample scope for creators to engage in the creation of derivative works. Rights of both of the aforementioned stakeholders are protected as separate copyrights under Title 17 of the United States Code. However, the stance taken by the 9th Circuit Court is the way forward that India should consider employing, as it is expansive. As held in Newton v. Diamond, the rule of de minimis must be used to determine copyright infringement with respect to derivative works.